Utility Patent Application

Provisional-Patent Application

A provisional application is a precursor to a “non-provisional utility-application” (regular application). Unlike a regular patent application, a provisional-patent application is NOT examined for patentability by the U.S. Patent and Trademark Office, and will automatically lapse 12 months after its filing date. However, a provisional-patent application offers the least expensive, and fastest way to kick off the patent process with the U.S. Patent and Trademark Office.

In other words, a provisional-patent application can serve as an informal filing with the U.S. Patent and Trademark Office. For instance, a provisional application may be filed without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. Thus, a provisional application provides a means to establish a quick filing date for a later filed regular application at the U.S. Patent and Trademark Office.

The provisional application also allows the term “Patent Pending” to be applied to written material associated with the invention.

An applicant who files a provisional application must file a corresponding regular application during the 12-month pendency period of the provisional application in order to benefit from the earlier filing date of the provisional application. One downside of filing a provisional application is that it can delay the patent process. For instance, if you wait the entire 12-month period to prepare/file a non-provisional application it may delay the amount of time it takes to obtain an enforceable patent. Filing a provisional application can also add expense to the patent-application process. Consequently, some businesses or inventors may opt to skip preparing and filing a provisional application. Instead, they may want to file a regular-patent application as the first step in the patent process.

On the other hand, during this 12-month period, a patent owner or inventor can use this time to improve upon the invention, explore marketing or licensing opportunities, start a company, and seek investors.

At Axenfeld Law, a registered-patent attorney will work with you to figure out whether it makes sense to file one or more provisional-patent applications before filing a non-provisional-patent application (regular application), or whether to skip the step of filing a provisional application altogether. Our goal is to put in place a patent strategy, which best fits your business goals.

A non-provisional utility patent application is examined by a Patent Examiner at the U.S. Patent and Trademark Office, and may be issued as an enforceable U.S. patent if all the requirements for patentability are met. A regular application must include claims, drawings if applicable, and an oath or declaration signed by the inventor(s).

So after a non-provisional utility patent application is filed, it is examined by a Patent Examiner familiar with the technology associated with your invention. The Patent Examiner is responsible for deciding whether your invention is worthy of patent protection, and how broad or narrow the claims of your patent will be. The goal is that your patent application will be allowed by the Patent Examiner, so that it can issue into an enforceable patent after the Issue Fee is paid.

At Axenfeld Law, our goal is prepare and file a quality patent application to place your patent application in the best condition for your first examination by the U.S. Patent and Trademark Office. We will then zealously advocate — based on the patent laws, and the facts associated with your particular technological advancements — why your patent application should be allowed to issue into an enforceable U.S. Patent. This may involve amending the claims of your patent application, discussing your patent application with the Patent Examiner at the U.S. Patent Office in Alexandria, Virginia. If warranted and although rare, we will file an Appeal with the Patent Trial and Appeal Board of the United States Patent & Trademark Office, or even the United States Court of Appeals for the Federal Circuit to overturn an Examiner’s rejection.

If you desire to obtain patent protection quickly, we can also explore ways in which to expedite the patent examination process. If you’re ready to dive into the patent process, Axenfeld Law’s patent attorneys can help you immediately prepare and file a high quality non-provisional utility patent application.